Office of Technology Transfer

About MTAs

Some of you may think that products or materials obtained from other laboratories or sent to other laboratories are mere exchanges of goods and services and do not need further attention. In fact, you are all conducting such exchanges, but few are really safe.

Think of it as a software you borrowed. There might be a virus. You did not know, but your graduate student had some problems recently. Damage may result and all of a sudden you are in the midst of a major allegation for damages. There might be room to expand and improve on the product.

Whose intellectual property will it become? Have you signed any document such as a Material Transfer Agreement (MTA), often an innocuous two-pager, without consultation with OTT? OTT provides such services and, yes, it may take a few more days.

But what about this researcher who forgot, having signed an MTA, that he was somehow giving a first right to license any improvement to the original donor? This was some time ago. And all of a sudden, while a new generation of products are developed based on this MTA and are reported to OTT, these inventions may not be yours to dispose of.

The reality is that prior assignments cannot be overlooked and it is never too late to have appropriate counselling. Thus, we strongly urge you to contact OTT before signing confidentiality or material transfer agreements.

MTAs can also be the source of considerable revenues. Few researchers are questioning themselves as to the value of a number of their compounds or tissues or strains that are cluttering the shelves. In fact, a number of these may be of value to others and, while you do not know this value, others often do not know how to gain access to these products. If this is of any use to you, we could start a centralized section on our OTT Web Site to register some products whose potential for MTA could be significant. Please contact your OTT officer to arrange for such a display.

New resources for liaison and commercialization

With the concurrence of some Deans and McGill-related hospitals, OTT is currently recruiting new officers to be located closer to the researchers, both in life sciences and in engineering. Other such positions are alos being considered in sectors such as software, information technologies and other promising areas.

By being closer to its client base, it is believed that OTT will become more present within the community and therefore will be able to respond more adequately to the need for awareness and information about intellectual property issues within faculties and departments.

These positions will also provide an additional linkage between McGill and industry. We expect that such liaison officers will help researchers better locate the type of industries -- both large and small -- with which to perform collaborative research. In fact, while it is often believed that small businesses have less means for university contracts, the reality is that they often prefer to farm out their R&D because of cost and infrastructure considerations.

Overheads within the industrial environment are such that university contracts are indeed a competitive option for a number of industries and tax credits for research associated with a university are an additional bonus. These new OTT positions have been funded via a series of mechanisms including a recently awarded NSERC grant to OTT under the Intellectual Property Management Program, the contribution of some deans and a contribution from the Martlet Research Trust.

The spin-off effect

OTT has again this year pursued its major thrust to encourage the spawning of a string of spin-offs. This is a resource-intensive process and we are now starting to feel that the monitoring and second round financing requires additional attention from OTT officers.

Last year, we had about eight new companies formed through OTT and we expect to reach this number again this year.

All these new companies will not necessarily survive in time. However, for a number of them, the initial incubation period within the University environment and with the scientific guidance of the inventors or technological entrepreneurs, is an essential and crucial step. The McGill administration has been responsive to these needs by providing flexibility to the researchers involved.

It has been a learning experience as well for OTT. Thus, we encourage those interested in starting a new company based on a technological invention to talk to us as early as possible in the process.

Our role is to facilitate the process for you. OTT officers will share their experience in this field and may also facilitate the search for financing.

This column is prepared by staff from the Faculty of Graduate Studies and Research.